Issue Joinder Practices Poised to Reset

As previously discussed, the Patent Trial & Appeal Board (PTAB) is now reconsidering its issue joinder practices. These practices were the subject of significant debate internal to the Board a few years back. The inability of the Board to arrive at a majority consensus on whether issue joinder was permitted by the AIA statutes led to the now infamous “panel stacking” decisions. These expanded panel decisions provided a brute force solution to the conflicting positions on the question of issue joinder, a de facto precedent of sorts.

With the new Precedential Opinion Panel, or “POP,” allowing for a more streamlined process for making precedent, the Board seems poised to drive official PTAB precedent on this question — but in a new direction.

Where the previous decisions found issue joinder to be consistent with the AIA statutes, the recent decision in Proppant Express Investments, LLC, Proppant Express Solutions, LLC v. Oren Technologies, LLC, (IPR2018-00914) finds it is not consistent. Since my initial post last November, amicus briefing has been accepted and an oral hearing conducted on Thursday, January 31st.

The amicus briefing (below) presents varying views of industry as well as individuals, but the writing appears to be on the wall that issue joinder will soon be officially outlawed by the POP’s first precedential decision.

Amicus submissions:

IXI IP, LLC

The Naples Roundtable

Scott A. McKeown is an author of the Patents Post Grant